The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Mai Miyota, Japan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On December 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on December 18, 2020. On December 16, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 18, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021. The Center appointed Keiji Kondo as the sole panelist in this matter on March 22, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is Compagnie Générale des Etablissements Michelin, a leading tire company. Headquartered in Clermont-Ferrand, France, the Complainant is present in 171 countries, including Japan. The Complainant has 114,000 employees and operates 69 tire manufacturing facilities worldwide. The Complainant publishes the MICHELIN Guide. It was first launched in 1920 in order to help motorists plan their trips – thereby boosting car sales and in turn, tyre purchases. In 1926, the guide began to award stars for fine dining establishments, initially marking them only with a single star. Five years later, a hierarchy of zero, one, two, and three stars was introduced, and in 1936, the criteria for the starred rankings were published. Thus, the Complainant is also known through its gastronomical and wine guides. The Complainant is the owner of the following trademark registrations throughout the world: - International trademark for MICHELIN No. 1245891, registered on December 10, 2014, covering goods and services in classes 35, 36, 39, 40, 41, 42, 44 and 45, and designating among others Japan; and The dispute domain name was registered on April 21, 2020. The disputed domain name is used to lead Internet users to a site entitled “Michelin Star Selection Cancellation” offering delivery services for Michelin starred wines. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1)). The Complainant and its trademark MICHELIN enjoy a worldwide reputation. The Complainant owns numerous MICHELIN trademark registrations around the world. The disputed domain name In many previous decisions, panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to the Complainant’s trademark (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. No. D2011-1627, Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin,WIPO Case No. D2010-1059 and The Stanley Works and Stanley Logistics, Inc. v.Camp Creek Co., Inc.,WIPO Case No. D2000-0113). The disputed domain name Furthermore, the trademark is associated with the new generic Top-Level Domain (“gTLD”) “.tokyo”. In recent cases, a panel found that “given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach”. (Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206, Hultafors Group AB v. my domain limited,WIPO Case No. D2014-0597). In the present case, the confusing similarity between the Complainant’s trademark MICHELIN and the disputed domain name As such a prior UDRP panel has concluded that the “addition of the top-level domain suffix ‘.tokyo’ does not detract from the confusingly similar nature of the disputed domain names, given the geographic and, thus, descriptive, nature of such top-level domain suffix” (Bulgari S.p.A v. Terry Romaro / Ship Agencies Australia Pty Ltd,WIPO Case No. D2014-2089). Accordingly, by registering the disputed domain name, the Respondent has created a likelihood of confusion with the Complainant’s trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant. For all of the above-mentioned reasons, the disputed domain name is confusingly similar to the trademark MICHELIN in which the Complainant has rights, and therefore the condition of Paragraph 4(a)(i) is fulfilled. The Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2)). The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the MICHELIN trademark precedes the registration of the disputed domain name for years. The Respondent is not commonly known by the disputed domain name or the name “MICHELIN”, in accordance with paragraph 4(c)(ii) of the Policy. There is no evidence that the Respondent may be commonly known by the name MICHELIN. Moreover, the Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. As mentioned, the disputed domain name, which incorporates the Complainant’s trademark, points to a website offering delivery services for Michelin starred wines. Indeed, this cannot be considered as a use of the disputed domain name in connection with a bona fide offering of goods and services. Additionally, the Respondent never answered to the Complainant’s letter despite the Complainant’s reminder. Panels have repeatedly stated that when the respondents do not avail themselves of their rights to respond to the complainants, it can be assumed that the respondents have no rights or legitimate interest in the disputed domain name (AREVA v. St James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269). Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to the Complainant’s trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. For all of the above-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under Paragraph 4(a)(ii) of the Policy. The disputed domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)). Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. 1) Registration in bad faith Bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which they had no rights or legitimate interests (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. Firstly, the Complainant is well-known throughout the world, including in the Japan where its manufacturing facilities are located. In this regard, many panels have previously acknowledged the Complainant’s reputation worldwide, making it unlikely that the Respondent was not aware of the Complainant’s rights in said trademark. Secondly, the composition of the disputed domain name Thirdly, the Complainant’s MICHELIN trademark registrations significantly predate the registration date of the disputed domain name. In this regard, previous panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com,WIPO Case No. D2007-0077). Under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. It means that it was Registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name (Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART,WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397). A quick MICHELIN trademark search would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226). Even supposing that the Respondent was not aware of the possibility of searching trademarks online before registering the disputed domain name, a simple search via Google or any other search engine using the keyword “MICHELIN” should have demonstrated that all first results related to the Complainant’s products or news. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its trademark, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name. It is most likely to be believed that the Respondent registered the disputed domain name Hence, in view of the above-mentioned circumstances, it is inconceivable that the Respondent did not have the Complainant’s trademark in mind at the time of registration of the disputed domain name. Consequently, it is established that the Respondent registered the disputed domain name in bad faith. 2) Use in bad faith Some elements may be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith. Previous panels have considered that in the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). As the disputed domain name is confusingly similar to the Complainant’s trademark, previous panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765; Edmunds.com, Inc. v. Triple E Holdings Limited,WIPO Case No. D2012-1765). Moreover, email server has been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme. Therefore, the use of an email address with the disputed domain name presents a significant risk where the Respondent could aim at stealing valuable information such as credit cards from the Complainant’s clients or employees. Such risk has been recognized by prior panel (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225). Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to the Complainant’s trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. All aforementioned circumstances confirm that the disputed domain name is used in bad faith. Consequently, it is established that the Respondent both registered and used the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The Registrar has confirmed that the language of the registration agreement is Japanese, but the Complaint has been submitted in English. On December 16, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 18, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding: - the Complaint was filed in English; The Complainant owns international and Japanese trademark registrations for MICHELIN. The disputed domain name consists of “michelin”, “-wine” and a new gTLD, “.tokyo”. The disputed domain name entirely incorporates the Complainant trademark MICHELIN. In the disputed domain name, the part “michelin” naturally attracts Internet users’ attention, and it is clearly recognizable. Moreover, the addition of “-wine” does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has never authorized the Respondent to use and register its trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. Nevertheless, the Respondent’s website offers wine delivery services with such a message as “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”. The Respondent’s use of the disputed domain name cannot be recognized as use in connection with a bona fide offering of goods or services. The Respondent is an individual whose name is Mai Miyota. The Panel sees no similarity between the Respondent’s name and the disputed domain name. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name. The Respondent’s website offers wine delivery services with the above mentioned confusing message, which would likely mislead consumers to recognize the Respondent’s website as somehow related to the Complainant. Therefore, the Panel finds that the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. Rather, it is clear to the Panel that the Respondent has intent for commercial gain to misleadingly divert consumers. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered on April 21, 2020, long after the Complainant’s publication “MICHELIN Guide” was first launched in 1920. Moreover, the Respondent website refers to “Starred sommelier” and “Michelin Starred selection”. Considering that the Complainant is famous for its publication “MICHELIN Guide”, the disputed domain name is easily associated with the Complainant. The composition of the disputed domain name affirms the likelihood of confusion (as it includes the trademark MICHELIN in its entirety with the added term “wine”), because it is well-known that MICHELIN Guide awards stars for fine dining establishments, and fine dining establishments often offer wines. In the present case, even the gTLD, “tokyo” may strengthen the confusion because Tokyo is a destination of many MICHELIN Guide users, and the Internet users can perceive the disputed domain name as somehow associated to the Complainant. As of 2020, it had been well known for a long time that “MICHELIN Guide” had been using a ranking method using the number of stars. Therefore, noting the content of the website it is clear that the Respondent knowingly chose the disputed domain name with intent to mislead Internet users. As mentioned above, the Respondent now uses the disputed domain name for offering delivery services of wine with reference to “Starred sommelier” and “Michelin Starred selection”, apparently attempting to cause confusion with the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Keiji Kondo
- Japanese trademark for MICHELIN No. 5809207, filed on March 13, 2015, registered on November 27, 2015 and covering goods and services in classes 8, 11, 16, 20, 21, 24 and 26.
- the Complainant is a French entity, and represented by a French firm;
- the Respondent’s address is in Japan, but the Respondent’s website displays commercial messages in English;
- the Respondent did not comment on the language of the proceeding;
- the Respondent did not reply to the Complainant’s contentions in any way;
- the disputed domain name contains the word “wine”, which is obviously an English word; and
- ordering the translation of the Complaint would only result in extra delay and cost for the Complainant. 6.2. Substantive Issues A. Identical or Confusingly Similar
Sole Panelist
Date: April 3, 2021
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